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The Newsletter of the Licensing Executives Society (U.S.A. and Canada), Inc.

Vol. XXIV No. 4

December 2016

Sowing The Seeds For Inspiration and Creativity Brian P. O’Shaughnessy Chairman of the Board & President, LES (USA & Canada)

Dear Friends and Colleagues: As members and supporters of LES, you are at the forefront of innovation, commercialization, and business development. Without you, the Innovation Economy would not be the robust economic engine that it is today. You create opportunity for inventors, new products to improve lives, and markets that fuel economies. Were it not for the licensing community, intellectual property as an asset would be a dry and sterile commodity rather than the seed of inspiration and industry that it is today. Here is where innovation meets application, and creativity takes flight. It is a great honor to serve LES as its President, and I look forward to working with you in furthering its mission. From its founding, the LES mission has been a noble one, focused on community, collegiality, and cooperation, not merely for personal enrichment, but for the betterment of the profession, and the improvement of the human condition.

next generation. Frank Barnes Mentors give selflessly to their colleagues and to their profession, not merely to ensure that the next generation has the necessary tactical skills, but that they hold fast to the finer traditions and high moral standards that are the hallmarks of excellence and achievement in our profession. Likewise, the Society annually acknowledges its Deals of Distinction awardees. These are individuals, chosen by their peers, for having crafted creative, durable, and worthy deals. It is especially notable that these awards always go to all parties in the transaction, acknowledging that the greatest deals require give and take, and often great patience, but ultimately all for the greater good—bringing new and innovative products and services to the public, creating new businesses and markets, and thereby fueling a virtuous cycle of ongoing innovation. You are all to be commended for your contributions to the profession and to the

Society. Your generosity in devoting your own time and talent to the good works of this Society is what has made LES the leading licensing organization in the world. This is your Society, and its success is a testament to your continued involvement, engagement, and support. Those of us who attend LES meetings know that every meeting is much more than what we hear from those at the lectern. It is the chance encounter, the random introduction, and the collective pursuit of common goals that create and sustain this community, and enhance our own professional network. For all its bells and whistles, the so-called “online community” is no match for what you can achieve, and the relationships you can form, at an LES meeting. The importance and relevance of LES continues to grow. The innovation economy, and the very concept of intellectual property, is under attack. There are those who urge that intellectual property is a mere abstraction, something governments can dispense or withhold at will. We know that, in order to thrive, the innovation economy demands much more. As a Society, we will continue educating legislators, judges, and the executive branch, both in the U.S. and Canada, as to the workings of the innovation economy, and how best to support it for the public good. Our efforts include white Continued on Page 2

This is reflected in the honors the Society bestows on its most distinguished members. Among the Society’s highest honors is the Frank Barnes Mentor Award—given to an LES Member who has shown outstanding dedication to the licensing profession by devoting time and talent to mentoring the

LES VIEWPOINTS HIGHLIGHTS Robin Farmanfarmaian— Embrace Disruption, Digitization Page 4

2016 LES Annual Meeting What did you miss? Pages 6-7

Deals Of Distinction Powerhouse deals & genome editing Page 10

LES Standards: Protecting IP In The Global Supply Chain Page 12

Viewpoints OFFICERS

Chairman & President: Brian P. O’Shaughnessy Past President: Jeffrey S. Whittle, CLP Chairman Elect & President Elect: William Elkington Counsel: Paul A. Roberts, CLP Secretary: Arthur S. Rose, CLP Treasurer: Guari Prakash-Canjels Regional Vice President Canada and Local Chapters: Panagiota (Betty) Koutsogiannis Regional Vice President, USA, Policy, Standards, International & Strategic Planning: Robert F. Held, CLP Vice President, International: Ned E. Barlas, CLP Senior Vice President, Membership, Communications & Technology: Ida Shum Senior Vice President, Meetings, Education & Strategic Alliances: Gary Fedorochko Vice President, Public Policy & Standards: Rachel Kreppel

DIRECTORS Local Chapters West: Louise Levien Local Chapters East: Annie Gauthier Membership & Member Engagement: Kevin Spivak Communications & Publications: Gillian Fenton Meetings: Scott Williams Education: Matthew McNeill

Membership inquiries and contact changes should be sent to:

President’s Report, continued from Page 1

papers, amicus briefs, and external educational programs. Our goal is to advance IP law and policy that: promotes innovation; respects IP as a legitimate property right; and supports an open, equitable, and dynamic market economy. Likewise, the Society will continue to work throughout the innovation economy to develop standards in licensing to advance the profession, make the practice of licensing and business development more economical and less risky, and contribute to the evolution and application of ethical and prudent business practices. We know that the most carefully devised standards will find no acceptance unless they simultaneously preserve the liberty of individual enterprises to pursue practices beneficial to their own business models. By balancing common principles and preserving such liberty, we will not merely improve the practice of licensing, we will enhance public trust and the development of informed and practical policies. Regardless of your view of licensing as an enterprise, the licensing community needs your involvement in this worthy initiative. I thank you all for your participation and support of these, and many more, important initiatives in which the Society is engaged. Finally, last year, you exemplified the adventurous and enlightened spirit of LES in approving a substantial revision to our Bylaws. This revision is central to a long range strategic planning process that drew from the wisdom of many diverse members of the Society. It restores much of the tactical and operational

Editorial inquiries and contributions should be addressed to: Editoral Director: Heather Konya Editorial Manager: Monique dela Cruz The quarterly newsletter is published by LES (USA & Canada) and is available online at Views expressed in articles are solely those of the respective authors.

ARTICLE DEADLINES FOR QUARTER 1 LES VIEWPOINTS: JANUARY 5, 2017 Copyright © 2016 Licensing Executives Society (U.S.A. and Canada), Inc.

Gala dinner reception at the 2016 LES Annual Meeting in Vancouver, Canada.

Past-President Jeff Whittle, (right) passes the gavel to incoming President Brian O’Shaughnessy.

responsibility of the Society to you, the members; and empowers you to inform the work of the Society in a more direct, participatory manner. The restructured Board of Directors will be smaller, and more focused on strategy. The Board will also focus on consistency in operations, and leadership development so that the Society stays true to its mission, and affords ample opportunity for the growth and development of its members. There is no better time to engage further in the work of this Society. New opportunities and responsibilities abound. We look forward to working with you as we create and explore those opportunities, and as we collectively make the world a better place through licensing. Thank you for your help and participation. Brian P. O’Shaughnessy

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How To Embrace Disruption And Prepare For Rapid Digitization


highlight of the annual conference kickedoff with an energetic and fast-paced opening plenary given by Robin Farmanfarmaian. In her keynote titled, “Exponential Technologies Drive Global Changes in Business Models,” Farmanfarmaian explored how new technologies are driving the rapid digitization of our entire world.

Robin Farmanfarmaian was a keynote speaker at the opening plenary at the LES Annual Meeting in Vancouver.

A few years ago, clothing companies were strictly clothing companies. As technology advances, our exercise gear becomes much more than t-shirt and shorts. Companies like Under Armour are working to turn our clothes into wearable gadgets that collect valuable data with the goal of making athletes better, stronger and faster.

“The business you were in in 2015 may not be the business you are in in 2017,” says Farmanfarmaian who believes that nearly every Fortune 500 company will be disrupted in the next few years. Farmanfarmaian uses the Law of Accelerating Returns to argue that the last five years are not a good representation of how fast things are going to move in the next two or three years. “We’ve reached the inflection point of many technologies,” says Farmanfarmaian. Products like 3D printers and drones are expected to see explosive growth in the next few years. For example, the drone market is expected to grow to $127 billion by 2020. Farmanfarmaian herself is an entrepreneur and best-selling author working in cutting edge technology and medicine. She is currently the COO of Arc Fusion Programs, working on the fusion of medicine, science and IT. She also serves as a VP at INVICTA Medical, a device company for sleep apnea. Farmanfarmaian spoke about the disruption across a variety of segments including medical science, software and augmented reality. Her advice for the audience: work with disruption. Companies like Under Armour and UPS are already doing this. Disruptive platforms such as Airbnb and Uber along with the power of the crowd are changing how we do business. Airbnb is now the largest real estate company that owns no real estate. Uber is now the largest taxi company that owns no vehicles. Skype is the largest long-distance phone company that owns no equipment. More proof that your current industry segment will look very different in the coming years.

4 | LES Viewpoints

For IP and tech professionals, Farmanfarmaian maintains that a thriving career is ahead as we guide companies through these complex and fast moving issues. Robin Farmanfarmaian’s book, “The Patient as CEO, How Technology Empowers The Healthcare Consumer.”

Table of


Letter from the President & Chairman ....................1 Robin Farmanfarmaian Rapid Digitization ..........................4 Recap: LES Annual Meeting in Vancouver .................................6-7 Do Patents Still Matter? .................8 Ed Saltzman, 2016 LES Frank Barnes Mentor Award ...................9 LES Members on the Move ...........9 Spotlight: IP Deals of Distinction Awards .......................................10 LESI Outstanding Service Award— Pam Cox .....................................11 CLP Certification...........................11 LES Standards ............................12 Local Chapters ...............................13 IP100: Executive Forum—2017 ................15 IP Business Basics 101 .................16 In Memoriam ..................................16 LES New Members ...................17-18 LES 2017 Annual Meeting Planning Committee ......................18 Brian O’Shaughnessy— The Art of Licensing .......................19 LES Foundation International Business Plan Competition ...........20

Let’s Celebrate! Microsoft is proud to support Licensing Executive Society in its mission to facilitate global IP commerce through education, networking, standards development, and certification. Wishing everyone a happy holidays and happy new year.


Recap: 2016 Annual LES Meeting In Vancouver

eautiful Vancouver was the backdrop for this year’s LES (USA & Canada) Annual Meeting, which took place October 23-26. More than 650 attendees gathered to learn about the global changes our industry is experiencing and how we can adapt to the everchanging landscape. Sunday’s Taste of Vancouver reception featured attorney/comic Tim Lowman dressed as the Canadian Mounty. He teasingly invited everyone that wasn’t happy with the U.S. Presidential election to move to Canada on November 9th, also sharing some insight on the application process. “Complete Form 47 with the knowledge that Canadians, like Americans, are armed—with the facts,” said Lowman. The conference was packed with informative breakout sessions and networking opportunities with many of our industry’s top deal makers. Monday opened with a thought-provoking keynote given by Robin Farmanfarmaian, the CEO of Arc Fusion Programs. In her keynote titled, “Exponential Technologies Drive Global Changes in Business Models,” she explored how new technologies are driving the rapid digitization of our entire world. “The business you were in in 2015 may not be the business you are in in 2017,” says Farmanfarmaian who believes that nearly every Fortune 500 company will be disrupted in the next few years. In a breakout session titled, “Gene Editing—More than just CRISPR,” the panelists discussed the lasting impact CRISPR will have on human therapeutics, the agricultural industry and potential revenue models that include licensing. One of the top-of-mind questions is the value of CRISPR and what to charge. The panelists agreed that there is no fast and easy answer, and it will likely come to down to testing the market and understanding their willingness to pay. Monday concluded with the LES Gala Dinner Celebration and the

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Gala Dinner Reception at the Annual Meeting.

Frank Barnes Awards Presentation. Ed Saltzman of Defined Health was the recipient of this year’s award for his commitment to the field of licensing through mentorship. The evening’s entertainment featured the IMPROVisors comedy act, along the impressive improve-skills of outgoing LES Chairman and President Jeff Whittle who participated in one of the skits. Tuesday’s plenary panel included a powerhouse of patent experts who answered the question, “Do patents still matter?” The panel agreed with a resounding yes, and referenced a recent study titled The Bright Side of Patents. According to the study, patents are a key source of innovation, job and economic growth and they are a key component that helps facilitate funding. Michael Fröhlich, Director of European and International Legal Affairs with European Patent Office, addressed how the Brexit might impact the patent system. With the Brexit in motion, the 13 member states must vote to ratify the decision to participate. He said it’s legally possible for them to participate after they’ve left the EU. Danny Marti, the U.S. Intellectual Property Enforcement Coordinator at the White House provided an update on his office’s strategic plan and encouraged everyone to stay engaged with his office so his team can better understand marketplace challenges. Russell Levine presented his annual, “Top 10 Court Decisions of 2016 Workshop.” He shared a few cases that relate to arbitration, as well as royalty structures in licensing deals. On Wednesday, the new board members were officially inducted as new President Brian O’Shaughnessy led the charge to re-energize our Society for 2016 into 2017. He also thanked Past-President Jeff Whittle and asked for his guidance in the transition. The Annual Meeting came to a close with a Local Chapter Chair roundtable session that shared best practices. Chapter awards were also given out, see Page 10 for photos and honorees. A final wine & cheese reception was a warm wrap-up to a meeting filled with information, entertainment and new connections.

LES Annual Meeting 2016 In Photos

LES 2016 Annual Meeting, October 23-26, 2016.

Meeting Registration.

Speed mentoring for new members.

Jeff Whittle welcomes attendees.

Robert Bramson (right) & Steven Visco, the “Battery Guys.”

Audience for Innovation in Business Models: Global IP Strategies.

Meeting & Event Chairs, Mark & Marcie Peterson.

Brian O’Shaughnessy accepts Presidency.

Attendees enjoy lunch & learning.

Bill Elkington plans 2017 annual meeting.

Networking at the Welcome Reception.

LES (Let’s Eat Some more) treats!

Panel audience.

Attendee reflections and view of meeting venue at Canada Place.

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Panel. Panel on Use & Value of Preferential Rights in IP Agreements.

Do Patents Still Matter?


n recent years, the patent system has come under increasing scrutiny, forcing us to ask if patents still matter. LES was pleased to host a powerhouse of patent experts during this plenary panel at the Annual Meeting. As moderator David Kappos of Cravath, Swaine & Moore rephrased the question, do patents still matter enough? “Yes they are a business strategy that needs to be considered carefully,” said Russ Slifer, Under Secretary of Commerce for Intellectual Property and the Deputy Director of the USPTO. “You must look at the entire business and the competitive landscape at the time.” Slifer pointed to a recent study titled, “The Bright Side of Patents.” According to the study, patents are a key source of innovation, job and economic growth and they are a key component that helps facilitate funding. Companies who are awarded patents achieve significant sales growth compared to startups not awarded their first patent—as high as 51 percent more growth. Additionally, when companies don’t receive a patent, employment decreases, by 20 percent. Konstantinos Georgaras, the Executive Director of the Canadian Intellectual Property Office noted that more and more cross border filings reflect the way businesses are operating today. “IP intensive industries represent 25 percent of Canada’s GDP,” said Georgaras. “Research on small and medium-size enterprises also show that 14 percent hold patents.” Additionally, Canadian SMEs that hold patents are more likely to export goods and services, and be categorized as high growth firms. “The answer can only be yes,” said Michael Fröhlich, Director of European and International Legal Affairs with European Patent Office. “There is an impression that patents stifle innovation and small companies might be intimidated by the 800-pound gorillas spending millions fighting each other. While this is true the patent system is health.”

Panel: David Kappos, moderator (left), Konstantino Georgaras, Russ Slifer and Michael Frohlich.

He also noted that there are isolated incidents and industries where innovation can occur without patents, but for many investors patents still matter. “Tech transfer through licensing would halt without patents, which would halt innovation and investments,” said Fröhlich. More than 42 percent of economic activity in the European Union is generated by IP intensive industries and 82 million jobs stem from companies that are IP intensive. The panel also addressed concerns about the time it takes to for a patent to be granted. Slifer noted that the USPTO is actively working to reduce the backlog and as of July 2016 they’ve reduced the time to 16 months. In Canada, they have an accelerated option but according to Georgaras it’s rarely used. He said companies take about four years for a variety of business reasons. With the accelerated option, there is speed when you need it but flexibility overall. “We’ve found that for every year there was a delay in the patent, business growth was stunted,” said Georgaras. “It’s important to get innovation out into the marketplace.” Fröhlich noted that in 2014 the European Patent Office launched a tool called Early Certainty from Search to help improve legal certainty on pending applications. “Our goal is to reduce this to 16 months for companies with no complications,” said Fröhlich.

8 | LES Viewpoints

Fröhlich was also asked if the Brexit will slow down the well-running patent system. With the Brexit in motion, the 13 member states must vote to ratify the decision to participate. He said it’s legally possible for them to participate after they’ve left the EU. “At this point it’s a political decision that needs to be made,” added Fröhlich. Post-panel debriefing: David Kappos (left), Konstantino Georgaras, Chuck Neuenschwander and Michael Frohlich.

Kappos summed up the session noting that patent systems do matter, in Canada, in the U.S. and in Europe.

How The Biopharma Industry Has Evolved In The Last 25 Years


n a lively session, Ed Saltzman of Defined Health discussed the business challenges facing biopharma and how we might start to address them. Saltzman took the audience back to 1991 to highlight the changes during the last 25 years. The first piece of evidence was the casual wardrobe adopted by the 2016 biopharma consultant—not a tie in sight! But there are many other differences, said Saltzman. Door to door sales have now become direct to consumer, which was controversial in the 1980’s. Patients are more actively seeking out a specific product, and injections are more common than pills. Unit-based pricing has been the longstanding model within big pharma and Saltzman argues that we need to move to an outcome-based model. “Value was never a priority, we always tried to justify the price after

the fact,” said Saltzman. “We must start earlier in terms of justifying the value of the price.”

Ed Saltzman Recipient Of The 2016 LES Frank Barnes Mentor Award

The public has a difficult time understanding six-figure drugs and the industry has tried to offset the decrease in volume by increasing the price, Saltzman added. Would the consultant from 1991 be shocked at what he might see today? Saltzman says yes because the challenges of science are receding while the business challenges are increasing. He points specifically to the top 10 selling drugs of 2010. The prices today are a bargain compared to what they were selling for in 2010. As the session concluded, Saltzman noted that we are moving toward extreme personalization. Music apps don’t simply know what artists we like; they go a level deeper. They know which songs from a specific artist we prefer the most. Consumers expect this level of personalization and this will be a challenge biopharma companies will face in the future.

Ed Saltzman’s reaction upon learning that he is receiving the 2016 LES Frank Barnes Mentor Award.

Ed Saltzman (center) receives the mentoring award from Bill Mattson (left) and Pam Demain at the 2016 LES Annual Meeting in Vancouver.

LES Main Office and Members on the Move Pamela Demain, Past-President, LES (USA & Canada) retired from Merck & Co., Inc. after 35 years. She was Executive Director, Business Development and Licensing. Her new e-mail address is LES (USA & Canada) New Address: Licensing Executives Society (U.S.A. and Canada), Inc. 11130 Sunrise Valley Drive, Suite 350 Reston, VA 20191

9 | December 2016

Ami Gadhia, J.D., LL.M., C.L.P. In May 2016, Ami joined the National Center for Advancing Translational Sciences (NCATS), National Institutes of Health (NIH) as Technology Transfer and Patenting Specialist. Her former employer was Johns Hopkins Technology Ventures, where she was Portfolio Director of Technology Licensing. Ami was also recognized as a Leading Woman by the Daily Record.

Sector Spotlight

By Carla Blackman

Year’s Best IP Business Deals Receive Prestigious Deals of Distinction™ Three of the year’s most outstanding intellectual property licensing deals have received the LES (USA & Canada) 2016 Deals of Distinction™ Award, which was presented at the Society’s 52th Annual Meeting, October 24 in Vancouver. The awards are presented annually to recognize the most outstanding IP business deals in industry sectors, including High Technology; Life Sciences; and, Chemicals, Energy, Environment and Materials. Several representatives from winning deal teams were on hand to present exclusive details about the evolution and dynamics of their winning transactions at the LES Annual Meeting. This year’s winning deals are:

Chemicals, Energy, Environment and Materials (CEEM) Sector Winner


Kimberly Clark and Imaflex Inc.

he winners of the 2016 Deals of Distinction Award for the Chemicals, Energy, Environment and Materials (CEEM) Sector were Kimberly-Clark Corporation and Imaflex Inc. for a Superabsorbent Polymer Licensing Agreement. The product was commercialized under the name Advaseal for use as an agricultural product. This award was presented by Bob Held.

10 | LES Viewpoints

Kimberly-Clark developed a 3-layer coating (.3 mil) mulch film which has superabsorbent polymers that are applied to soil. The advantage is that it prevents inhalation and environmental risks of conventional pesticide applications. Imaflex saw an opportunity to expand on its commitment to sustainable agriculture using less plastic & pesticides and waste.

The CEEM award: Christopher Kanters, FP Innovations (left); Michael L. Gross, Kimberly-Clark, Dr. Ralf Dujardin, Imaflex, and Rahl Das, Xinov.

High Technology Sector Winner


Nokia HERE Mapping Acquired By Audi, BMW & Daimler

inners for the High Technology Sector Deals of Distinction in 2016 involved Nokia, Audi, BMW and Daimler. The automotive consortium acquired Nokia’s HERE Mapping and Location Business for $3 Billion. It involved a bidding war between several players including: Uber, Baidu and Apax Partners; China’s Tencent Holds Lts.; Navinfo Co.; Swedish buyout firm EQT Partners AB, Microsoft offering to buy a minority stake; and U.S. private-equity firms: Hellman & Friedman; Silver Lake Management; and Thomas Bravo. Representing the deal at the meeting was Ian Dibernardo, Attorney. E-mail:

Life Sciences Sector Winner


Baxalta & Precision Biosciences

axalta and Precision Biosciences received the LES Life Sciences Sector 2016 Deals of Distinction Award for ARCUS Genome Editing Technology. The award was presented by Jim McCarthy with the committee led by Andy McGee. This deal was chosen because it represented leading edge science in the rapidly emerging genome editing field of CAR T cell therapy. It has the potential to become a curative option for certain malignancies. Proprietary ARCUS genome editing technology enables the production of CAR T cells derived from healthy donors. Michael Dombeck, Precision Biosciences said, “There were three challenges with this deal, one the technology itself, two the future products and three the partnership itself.” It was a 10 month negotiation, where they worked together to help each other through the process and discuss the potential technology path.

For the Life Sciences Deal: Mark Coflin, Baxalta (left), Jim McCarthy, and Michael Dombeck, Precision Biosciences.

Honored To Receive Service Award In Beijing By Pam Cox


am honored to have been awarded the Licensing Executives Society International Outstanding Service Award by LESI President, James Sobieraj at the LESI annual meeting in Beijing. Since Kevin Nachtrab appointed me Chair of Life Sciences we have spanned the globe from New Zealand to Rio, Russia to China and many European and U.S. stops in between learning and networking on legal and business issues affecting deals in life sciences. The LESI network is particularly well positioned to support this industry as, more likely than not, a deal of this sector is a global one. It is invaluable to have a wide network of trusted colleagues to vet intellectual property, antitrust/anti-competition and other legal issues. Yvonne Chua’s Joining Hands initiative inspired the Life Science committee to study and report on the joint ownership

laws around the world. There are a number of presentations, by country, on the LESI life science committee’s web page. If you do not see your country of interest, do not hesitate to contact current Chair, Gary Keller, to volunteer. We would like this valuable resource to continue to grow. We all appreciate that the blend of legal and business executives sets LESI apart from other professional organizations. Working closely with Pamela Demain, Past-president of LES (USA & Canada), we recently formed a Life Science Advisory Board. Programming and events should only get better with the guidance of the Board. Returning from LES Scandinavia’s outstanding annual meeting, I must share that this is an exciting and “happy” time to be an LES member.

Jim Sobieraj presents award to Pam Cox at the LESI Annual Meeting in Beijing.

CLP Certification Toolkit Available


ertified Licensing Professionals are professionals who have demonstrated their knowledge and skill of the licensing and IP industry. These professionals have earned the respect and credibility of colleagues and peers. They are committed to continuing professional development and the licensing/IP profession as a whole. Approximately 800 individuals involved in patenting, marketing, valuation, IP law, negotiation and intellectual asset management currently hold the CLP certification.

Another helpful step is to review the CLP Candidate Handbook for a full listing of eligibility requirements, exam information (including what to expect on exam day), and a list of exam subject references. Step three is to request a copy of the CLP practice exam, free of charge, which assists candidates in learning more about the CLP exam. The CLP exam is offered during the

The CLP Toolkit is an all-inclusive page on the CLP website with need-toknow dates, FAQs, and CLP essentials.

Cynthia Allen, Certification Manager, with board members at the Tech Fair in Vancouver.

Recognize your experience, your qualifications, your understanding of the profession’s best practices, and your commitment to your career by earning the Certified Licensing Professional credential in 2017.

11 | December 2016

Licensing professionals who share similar priorities should join these individuals and become part of the CLP community. The first step—review the CLP Toolkit.

months of April and October each year. Registration is now open, and scheduling begins in February for the April 2017 exam window. Candidates may schedule the exam on the date and location of their choosing (availability is on a first come, first serve basis), and test locations are offered throughout the US and Canada, as well as internationally. Find a listing of test cities online. Candidates are offered two testing opportunities within 13-months of application, meaning that a second testing opportunity is offered at no extra cost, if needed.

LES Standards: Protecting IP In The Global Supply Chain By Craig Moss and Robin Corwin


he LES Standards Program is conceived to develop and teach best practices in many aspects of IP management and, where appropriate, offer enterprises the opportunity to differentiate themselves based on their use of these best practices. The first five standards committees being established are the following, with the following standards areas being actively considered: • Patent Licensing • IP Brokerage • IP Protection in Supply Chain • Patent Valuation • IP in the Boardroom

As part of the LES Standards initiative, we are developing a standard for protecting intellectual property (IP) in the supply chain. The goal is to create a way that any company can show that they have the business processes in place to protect their own IP and the IP of third parties (customers, suppliers, distributors, joint venture partners, etc.). We are addressing all types of IP—patents, trademarks, registered design, copyrights and trade secrets. Today, most companies primarily rely on legal means to protect IP. They file patents and trademarks and hope for compliance to contractual terms for protection of shared traded secrets. Our goal is to enhance the legal protection by embedding IP protection in how a company operates and interacts with other companies. The standard we are developing will define a common set of expectations for what a company can and should do to protect

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their own IP and the IP of customers, suppliers and partners. For many, it helps to think of quality management standards like ISO 9001 as a reference. ISO9001 uses a business-process approach for attaining high levels of product and service quality. In today’s global economy being certified to ISO9001 or another recognized quality standard, is virtually a requirement to be able to compete. The LES supply chain standard would set the bar for the management system a company should have in place to enhance the legal and contractual methods they now rely on to protect IP. Of course, every company is in someone’s end-to-end supply chain; so ultimately the standard will impact what a company does internally and what they do to manage their relationship with other companies. The standard would address elements such as: • Policies and procedures: Are there policies on using and protecting IP? Are they communicated to third parties? Are there procedures to ensure the policies are being followed? • Record keeping: Are there adequate and accurate records about how IP is handled? • Senior management commitment: Is IP protection promoted from the top and throughout the organization? Is this commitment communicated to other companies?

• Risk assessment: Has the company evaluated the probabil- ity and negative impact of IP loss? • Management of third parties: Is IP protection part of contract provisions, selection due diligence and the over- sight of suppliers, customers and partners? • Information technology and physical security: Are security systems in place and routinely followed? • Monitoring: Is someone checking to make sure that policies and procedures are being followed?

• Corrective actions: If problems are found, are actions being taken to fix the problem and address the root cause?

• Training and awareness building: Do employees know what IP is and how to protect it? Is effective training in place?

The standard aims to provide guidelines to foster a stronger culture of IP protection in the supply chain. It will help companies understand that filing patents, registering trademarks, and relying on contracts is not enough to protect IP in today’s global economy. The vision is to achieve standardization around how companies protect IP and to better integrate it into a holistic approach of mitigating risks in the end-to-end supply chain. Ultimately, the hope is that the standard can help companies gain a competitive advantage by demonstrating that they have a commitment to protecting IP—and that they are doing something about it.

12 | LES Viewpoints

For more information contact: JANET E. REED PH.D. (302) 984.6044 ww w . po tt er a nd ers on .c om

We are eager to get more companies involved in the supply chain standards working committee. It’s important to have companies from all levels of the supply chain and around the globe—from multinationals to manufacturers and distributors, particularly with representation from emerging markets. Having a broader group provides a wide range of perspectives that will help LES to develop a standard that is global, practical, applicable and effective for all parties. If you are interested in participating, contact Bill Elkington: bill.elkington@

Local Chapters

Chocolate In Montréal


& 3D Printing In Houston

ix LES chapters received awards for their events and activities held during 2016. The LES Board of Trustees recognized the creativity, dedication, and member engagement of chapters between October 2015 and September 2016. The Houston Chapter received the award for Most Creative Event by organizing an event discussing the potential of 3D printers and providing a demonstration of two, functioning printers at the

event. The Montréal Chapter received the award for the Highest Attendance by organizing a lively holiday party that included a chocolate tasting and a gift bag of chocolate samples for all attendees. The Québec Chapter received the award for excellence in chapter leadership for their efforts to re-engage the chapter and organize multiple events a year after many years of inactivity. The chapter awards were presented at the LES Annual Meeting in Vancouver, BC, before an audience of chapter leaders. LES Chairman and President, Brian O’Shaughnessy, and LES PastRegional Vice President for Canada and Local Chapters, Hilton Sue, presented the awards and commended the chapters for their leadership and dedication to LES. Participate in Your Local Chapter LES Chapter events are the primary means for LES members to network, stay current on events and policies impacting the profession, to hear from expert speakers on licensing issues, and earn CLE credits.

Annie Gauthier (center) explains how chocolate-tasting worked for the Montréal Chapter’s holiday party. Brian O’Shaughnessy (left) and Hilton Sue presented her with the award for Most Attendance at a Chapter Event.

The LES Board of Trustees congratulates these chapters for their achievement: Most Creative Event Houston Chapter

LES members are strongly encouraged to attend their local chapter events in order to get the most benefit from their LES membership. Find your local chapter When you find your local chapter at the above link, click “Join Group” at the top of the chapter webpage in order to receive email announcements about chapter events. LES members can join multiple chapters, which is helpful if you travel frequently or if there are multiple chapters in your region.

Excellence in Chapter Leadership Québec City Chapter Highest Attendance at a Chapter Event Montréal (117 people) Most Events Held Silicon Valley (11 events) Small Chapter Membership Award Seattle (25 new members) Large Chapter Membership Award Washington, D.C. (38 new members)

Jonathon Hance Houston Chapter Chair

Tatiana Moore Seattle Chapter

Most Creative Event

Small Chapter With The Most Increase In Membership

Ray Van Dyke Washington, D.C., Chapter Chair Large Chapter With The Most Increase In Membership

3D Printing Demonstration At Houston Chapter Event


n July 2016, the Houston LES Chapter hosted a panel discussion on 3D printing technology, both from the perspective of the technology itself, and from the licensing/legal perspective that is somewhat unique and challenging to this new technology.

Pictures of the Houston event and the printers:

13 | December 2016

Attendees saw a demonstration of two fully operational 3D printers that were set up and running throughout the event. 3D printing is seeing practical use in Houston, as highlighted by Patrick Ferrell, who discussed the potential use of 3D printing for societal good. Soon after this presentation, Houston local media featured a story about the success of using this inexpensive 3D printing technology to create a prosthetic hand for a young Houston-area girl born with a deformity. Ferrell’s high-tech lab housed at a Houston-area library created the prosthetic.

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IP100 Executive Forum – 2017 February 27-28, 2017 • Arizona Biltmore • Phoenix, AZ

The Future of I_ (Property, Assets, Capital?): Nothing Is Certain But Change How are market, legal, cultural, and technology trends impacting traditional IP and future deals?


his LES (USA & Canada) invitation-only event annually gathers 100 senior-level executives from IP owner organizations to address today’s key IP issues. The IP100 Executive Forum is a unique and exclusive gathering of experienced and knowledgeable licensing professionals and senior executives charged with the IP decision-making responsibilities within their organizations. The IP100 focuses on strategic issues related to IP business, including IP valuation and monetization, best practices in deal structure, IP strategy, and organizational alignment.


ES (USA & Canada) appeared in a Capitol Hill briefing addressing the

importance to the U.S. economy of the Bayh-Dole Act. LES was represented by its President and Board Chair, Brian P. O’Shaughnessy, a shareholder with RatnerPrestia. The Policy Briefing, which also featured Joseph P. Allen, Former U.S. Senate Judiciary Counsel for Sen. Birch Bayh; and Stephen J. Susalka, Executive Director, Association of University Technology Managers (AUTM), was held in the U.S. House of Representatives

The event takes place February 27-28, 2017 at the Arizona Biltmore in Phoenix. With Matthew McNeill as Chair, the program includes these topics:

Rayburn Office Building, Monday, November 28, 2016 at 12:00 PM, and was hosted by the Eagle Forum.

• New ways of defining and creating I_ • Strategic Management of I_ to create and sustain value • Valuation and transactions in I_ in the Knowledge Economy For more information and attendance qualifications visit: http://www.lesusacanada. org/?page=ip10017

LES Appeared At Bayh-Dole Briefing On Capitol Hill

The Policy Briefing examined the critical role that U.S. universities play in supporting the innovation economy, and in stimulating the commercial development Matthew McNeill, Chair of the IP100

of new technologies and new industries. The Bayh-Dole Act is the cornerstone of university technology transfer whereby the products of university-led research are brought into the commercial realm and developed for the common good. As other economies around the world have begun implementing their own versions, the Bayh-Dole Act itself has come under attack here in the country of its birth. The panel addressed the role that the Bayh-Dole Act has played in stimulating investment in sponsored research at development, at both regional and national levels, by bringing the fruits of such research out into the marketplace.

15 | LES Viewpoints

America’s universities, and in economic

15 | December 2016

Claire Picone sends her deepest thanks to the LES (USA & Canada) participants that worked on Tom Picone’s Memory Book. This group honored Tom Picone’s memory at an LES New Jersey Meeting in September. From left: Mary Joan Picone, Tom’s sister; Pamela Demain, LES Past-President; Daisy Muzzio-Rivera, co-chair LES New Jersey Chapter; Mike Picone, Tom’s son; Claire Picone, Tom’s wife; Alison Picone, daughter-in-law and Bob’s wife; Bob Picone, Tom’s son; and Paul Gallagher.


Business Basics 101

Ada Nielsen and Matthew McNeill (front row, right) with their class.

da Nielsen and Matthew McNeill held a one-day, deal-centric course on Sunday Oct. 23 at the Annual Meeting in Vancouver. It covered trademarks, international brands, patent know-how, trade secrets and much more with interactive, hands-on, group exercises. The course has been designed by experienced Licensing Executives for business executives newer to the field in the U.S. and Canada by Ada Nielsen and Jeff Whittle.

Look for the next course offering here:

In Memoriam: Edmund Astolfi

16 | LES Viewpoints


dmund G. Astolfi, 88, passed away on August 13, 2016, with his wife and children by his side. He is survived by his wife, Ernine; his sons: Robert Astolfi (Jennifer Estes) of Colleyville, TX; David Astolfi of Melbourne Beach, FL; his daughter, Carol Cooke (Geoffrey) of Jacksonville, FL; and his grandchildren and great-grandchildren. Mr. Astolfi retired from American National Can Company in 1990 after 34 years, where he held management positions in R&D, commercial development of new products, new busi-

ness operations, and domestic and international technology licensing. He successfully negotiated technology licenses worldwide. For many years, Mr. Astolfi had been active in the Licensing Executives Society (LES) as: chairman of numerous domestic and international committees, member of the Board of Trustees for seven years and Vice President of the Society’s Eastern Region. In 1993, he chaired the LES Online Committee, which established an electronic information service for the worldwide LES membership. His extensive service earned him, in 1993, the Award of Honor, the highest honor that can be bestowed upon a member of LES (USA & Canada), and in 1998 the Society elected him a Life Member. Please visit his online Tribute at

LES New Members Neil Belson

Of Counsel Potomac Law Group, PLLC

Mike Berglund Sr.

Director, Transactions Eli Lilly & Co.

As of October 31, 2016

Heidi Falckh

Medical The Hospital for Sick Children

Yuezhong Feng

Shareholder Brinks Gilson & Lione

Christopher Blackford Partner Finnegan LLP

Odd Bres

Technology Transfer Specialist University of Manitoba

Raghu Chinagudabha

Manager, Patent Engineering Microsoft Corp.

Zenas Choi

Partner Hogan Lovells US LLP

Mark Coflin

Jake Ferderer

Attorney Christensen O’Connor Johnson Kindness PLLC

Kathleen Gersh

Attorney Loeb & Loeb LLP

Ananda Ghosh

Technology Marketing Associate NYU Medical Center

James Giffin

Head of Alliance Management Shire Pharmaceuticals

Senior Vice President Bench International

Tim Considine

Michelle Gillette

VP Business Development Recursion Pharmaceuticals

Rahul Das

Assistant Vice President Xinova

Walter Davis

Partner Crowell & Moring LLP

Nelson Godfrey

Barrister and Solicitor Smart & Biggar

Partner Davidson, Berquist, Jackson & Gowdey, LLP

Isabelle Gorrillot (renewed)

Daniel DeLorenzo

Darla Graff

Managing Director Areon Biosciences LLC

Director FTI Consulting


Sean Duggan

Corporate Counsel Google Inc.

Global IP Operations Manager YFAI

George Durrance

Contract Administrator Acceleron Pharma Inc.

Dmitry Dymarsky

Clay Entsminger

Student University Of New Hampshire

Jeff Gunther Lawrence Hadley

Attorney McKool Smith Hennigan

John Halan

Shareholder Brooks Kushman P.C.

Rachel Haller

Seed IP Law Group

Maria Kuziw

Aida Herrera

Samuel LaBrie

Milena Higgins

Patrick Lally

Laura Hillock

Ron Laurie

Patent Attorney Seed IP Law Group Licensing Manager Boston Children’s Hospital Principal Cupitor Consulting LLC Associate General Counsel University of Pittsburgh

David Hinton

Marketing and Licensing Associate University of South Alabama

Swapna Hiray

Director Intellectual Ventures

Skip Irving

Vice President Noveome Inc.

Takuya Izumi

Representative NEDO Silicon Valley Office

Stephen Jackson

CEO Aerify Technologies LLC

Vendor Management Otsuka America Pharmaceutical SVP Corporate Development Myriad RBM, Inc. VP OrbiMed Advisors Inflexion Point Strategy, LLC

Leon Legleiter

Patent Attorney Jenkins, Wilson, Taylor & Hunt

Alan Lund

President Veloxint Corporation

Tarique Masroor

Ahmed Student Punjab University Pakistan

Christopher McKeag

Student The University of Texas at Austin

Kimberly McManus Partner Aird & McBurney LP

Abhishek Jain

Silvia Michelazzi

Vice President Xinova

Senior Contracts Manager Vertex Pharmaceuticals

Pamela Kane

Stephen Moitozo

Partner Panza Maurer & Maynard, P.A.

Chief Innovation Development SIL International

Casey Kelley

David Newman

Co-Head, Research The Stevenson Group

Partner Gould & Ratner LLP

Jessica Kim-Gina

Michael Pellegrino

Ana Kiricova

Bryce Pilz

Sadhna Kohli

George Ptasinski

Student University of Pennsylvania Business Development Executive Argonne National Laboratory Technology Licensing Manager Mayo Clinic

President Pellegrino & Associates, LLC Director of Licensing University of Michigan Licensing Manager Boeing Intellectual Licensing Corp.

17 | December 2016

Associate Baker Hostetler LLP

Matthew Gubiotti

Karen Henckel

LES New Members (continued) Audrey Salazar Juanita Salazar

Managing Attorney JL Salazar Law Firm

Sanal Sasankan Patent Consultant Rubiscom

Christopher Scott

Intellectual Property Counsel D-Wave Systems Inc.

Ruth Shaffer

Office of Technology Development University of Oklahoma

Serge Shahinian

Partner, Patent Agent Goudreau Gage Dubuc

Elizabeth Smith Attorney Nixon Peabody

Bobby Soltani

Seed IP Law Group Director—Patent Licensing & Sales AT&T Intellectual Property

Anne Stevens

Senior Partner Northview Ventures Government Qatar Foundation

Stephen Wheatley

Hsinyi Tseng

James Wilcox

VP, Global Brand Protection Western Digital

Joseph Speeney

Jason Stolworthy

Cynthia Tregillis

Technology Commercialization & IPL Advisor ExxonMobil Upstream Research

Dana Turner-Ryan Partner SMITHS IP (renewed)

Myron Stout

Principal Perdix Capital Management

Donna Taraborelli

Sr. Director, Development Clearside Biomedical

William Taylor

2017 Annual Meeting Committee

Joe Underwood

Associate Director -Licensing University of Arkansas for Medical Sciences

John Veschi

Marquis Technologies

Robert Wells

Attorney Finnegan, Henderson, Farabow, Garrett & Dunner

IP Manager Pason Systems

Associate Buchanan Ingersoll

Jessica Williams

Business Development Manager SomaLogic, Inc.

Fiona Wills

CoMotion University of Washington

Linda Woermer

Global Mgr M&A, Licensing Indivior

Ryan Zurek Director Ocean Tomo

Bernard Zuzo

President BGZ Technology, LLC

LES Advertising Index Finnegan 3 Microsoft 5

18 | LES Viewpoints

This group gathered to start planning the 2017 Annual Meeting. Front row: Ray Van Dyke (left), John McKraken, Emma Bienias (2017 Annual Meeting Budget Chair), Justin Lewis (Spring Meeting Chair), Bill Elkington, Louise Levien Back row: Michael Fluhler (left), Mark Peterson, Jeff Langer, Gary Fedorochko, Bob Held, Brian O’Shaughnessy, Sian Godwin, Elizabeth Gildea, Jui Lim, Scott Williams and Andrew Carmen Sian Godwin, Annual Meeting Chair (left); Scott Williams, Director for Meetings, and Brian O’Shaughnessy, LES President led the meeting.

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Call for volunteers to join this enthusiastic group for the 2017 Annual Meeting and the Spring Meeting. contact

Brian O’Shaughnessy On LES, The Art Of Licensing, And Self-Driving Cars Brian P. O’Shaughnessy Chairman of the Board & President, LES (USA & Canada)


ES Viewpoints sat down with new President, Brian O’Shaughnessy, to talk about his vision for the organization and his favorite Annual Meeting memory. Brian discussed a poignant story about a tough licensing situation and how adversaries turned into allies. Needless to say, that is a skill that reaches far beyond licensing and extends to our daily lives. It’s heartening to read about what it means to strive for win-win. We also enjoyed hearing Brian expound on some less serious, but timely topics.

Q: A:

What do you hope to accomplish in 2017 as LES President?

Brian: LES has two very important

initiatives that I intend to advance. First, LES must serve the licensing community as a voice for sound intellectual property law and policy that serves the public interest. By providing incentives for innovation, and proper encouragement for the commercial development of the fruits of innovation, we advance the development and use of our new and improved products and services to enhance the human condition. Second, LES will enhance the practice of licensing through its standards initiative. Through this initiative, LES and the whole of the licensing community will develop commonly accepted practices and protocols that will streamline licensing, speed new products to market, and improve the ethical conduct of the profession. By developing such standards, officers and boards will better understand how to protect and exploit their intellectual assets, negotiations will be concluded in a rapid and facile fashion, and a more robust and reliable body of knowledge will arise as to the value of intellectual assets.  

Q: A:

What excites you about LES?

Brian: What excites me about LES is

its people, and its culture of cooperation and fellowship. LES members are among the most welcoming and supportive people in the professional world. The tradition and legacy of LES is mentorship and sharing of best practices. Whether we talk about our curriculum based education programs, our workshops, or our general meeting content, there is a sense within the LES community that we can all improve our profession and our own personal professional development by taking advantage of the LES experience, and by working together to further its good works.     

Q: A:

Share your most memorable licensing experience over your career. Brian: My most memorable licens-

ing experience was being called into a licensing negotiation on behalf of a client. The negotiation had taken an unfortunate turn, and goodwill had been lost. The licensee was a very sophisticated company, with a great deal of experience in licensing. I was able to restore goodwill among the parties, identify the real issue that was complicating resolution of the negotiations, and bring the parties to a mutually advantageous  arrangement. The result was that subsequently, and with both parties’ knowledge, I came to represent both parties in other unrelated matters; and both came to be valued clients for many years thereafter. When you can turn adversaries into allies, that is the pinnacle of good licensing practices. 

Q: A:

What is the best advice you’ve received pertaining to licensing?

Brian Strive for win-win. Every deal

requires give and take, and the art of doing it well is to know what you can give and what you can reasonably get such that both parties feel that the arrangement is worthy and respectable.

Q: A:

Your favorite LES Annual Meeting memory?

Brian: My favorite memory is having

the privilege of moderating a discussion between Canada’s Justice Roger Hughes and former Federal Circuit Chief Judge Paul Michel at the 2014 Annual Meeting in Toronto. Here were two of the greatest minds of intellectual property jurisprudence, with differing views and operating in different judicial and legal settings. But they both provided such remarkable insights, and shared their views in such an erudite and constructive fashion. It was a wonderful example of how two people with profoundly differing views can share their perspectives in a manner that is educational and constructive. It was a valuable lesson in how mutual respect paves the way for civil discourse, and worthy debate. 

Brian’s Forced Choice:

Self-Driving Car or I drive my own car: On my commute, self-driving. It’s liberating.  Coffee or Tea: Tea. Books or Movies: For genuine gratification and fulfillment, books. Star Wars or Star Trek: Trek, both new and old. Fiction or Non-fiction: Non. Smartphone or Tablet: Smartphone, convenience over size. Glasses or Contacts: Glasses, contacts are just too much trouble. Cats or Dogs: Believe it or not, I find this a really tough one, but dogs. Just can’t beat a companion who is incessantly happy to see you.  Wine or Beer: Wine. Early Bird or Night Owl: Night owl, it’s where the most creative reside. 

19 | December 2016

These two initiatives are things that only LES can accomplish. LES is unique in the composition and demographics of its membership. We represent all aspects of the innovation ecosystem. Through those diverse skills and perspectives, we can best address how intellectual property is developed and commercialized

in a manner that serves both private interests and the public good.   

LES Foundation

A foundation of the Licensing Executives Society (USA and Canada), Inc.


International Business Plan Competition Finalists receive cash prizes, world-class mentorship, and networking opportunities

What’s in it for YOU? ❱ Learn the basics of intellectual property and licensing ❱ Extraordinary mentorship, judging and feedback from IP and licensing professionals


❱ Use patent analysis tools from the IP ToolBox to

❱ Start-up company must have less than $200,000

❱ Learn how intellectual property strategy supports

equity investment as of November 16, 2016

❱ Business plan must have an IP component and build strategies for how the intellectual property will be used to achieve business plan objectives. Register early to build this component with LES mentors!

❱ NEW! The LES Foundation expands its invitation to ALL start-up companies that meet the above qualifications

20 | LES Viewpoints

The competition is a credit to the LESI, not only is it well run and facilitated but it provides a valuable learning and networking experience. As the Global LESI winner the benefits to my business have been numerous. The prestige and validation of the business model [which] the award brings serves as a concrete reminder of the value we are working to generate. Peter Bares, Poppet International, Pty., Ltd.

learn about freedom to operate and close art your business plan

❱ Finalists virtually compete at the LES (USA & Canada) Spring Meeting in Washington, DC, May 8

❱ Chance to win $10,000 Grand Prize or $5,000 Global Award, and in-kind prizes. All finalist teams receive $1,000

❱ The best post-doctoral scholar and MS/MBA/ MD/JD/PhD student team from around world will receive special recognition

KEY DATES: November 16, 2016 START Date

December 16, 2016

DEADLINE for submissions to gain access to IP Tool Box and get a mentor

February 10, 2017

Business Plan submission DEADLINE (First Round)

May 8, 2017

FINAL round of the Business Plan Competition |

You need accurate, reliable evidence of use to assert your patents. Inside Technology can help you find it faster. It’s the ideal first checkpoint for semiconductor and electronics companies, law firms and other licensing professionals seeking to achieve their IP goals. For more information

21 | December 2016

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